OPPOSITION No B 2 679 887

Lopez-Ebri Fachübersetzungen GmbH, Lise-Meitner-Straße 2, 28359 Bremen, Deutschland (opponent), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Am Kaffee-Quartier 3, 28217 Bremen, Deutschland (professional representative)

a g a i n s t

Imagence L'agence Multimédia, 110 Boulevard Jean Jaurès, 92100 Boulogne Billancourt, France (applicant)

On 13/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 679 887 is partially upheld, namely for the following contested services:

Class 42: Software design and development; Design and development of software for website development; Design and development of electronic database software; Design and development of software for database management; Design and development of computer software for reading, transmitting and organising data; Design and development of computer software for use with medical technology; Design and development of operating software for accessing and using a cloud computing network; Technical project studies; Research and development of computer software ; Computer system design; Design of web pages; Programming of web pages; Web portal design; Programming of customized web pages; Website design; Managing the web sites of others.

2. European Union trade mark application No 14 441 422 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 441 422 namely against all the services in Class 42. The opposition is based on German trade mark registration No 30 470 628. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The services

The services on which the opposition is based are the following:

Class 41 Technical translations and documentation services, conference interpreting; language teaching.

Class 42 Scientific services.

The contested services are the following:

Class 42 Software design and development; Design and development of software for website development; Design and development of electronic database software; Design and development of software for database management; Design and development of computer software for reading, transmitting and organising data; Design and development of computer software for use with medical technology; Design and development of operating software for accessing and using a cloud computing network; Technical project studies; Research and development of computer software; Electronic data storage; Computer services concerning electronic data storage; Digitization of documents; Computer system design; Design of web pages; Hosting web sites; Programming of web pages; Web portal design; Hosting web portals; Programming of customized web pages; Hosting of customized web pages; Website design; Managing the web sites of others; Server hosting; Hosting computer sites; Hosting of databases.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested Software design and development; Design and development of software for website development; Design and development of electronic database software; Design and development of software for database management; Design and development of computer software for reading, transmitting and organising data; Design and development of computer software for use with medical technology; Design and development of operating software for accessing and using a cloud computing network; Technical project studies; Research and development of computer software; Computer system design; Design of web pages; Programming of web pages; Web portal design; Programming of customized web pages; Website design; Managing the web sites of others are similar to the opponent´s scientific services as they have the same nature and can coincide in producer and end user.

Electronic data storage; Computer services concerning electronic data storage; Digitization of documents; Hosting web sites; Hosting web portals; Hosting of customized web pages; Server hosting; Hosting computer sites; Hosting of databases are dissimilar to the opponent´s services in classes 41 and 42. They are different in nature and they serve a different purpose. They target a different public and are usually not provided by the same companies or available through the same distribution channels. They are neither in competition nor complementary to each other.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be similar are mainly directed at business customers with specific professional knowledge or expertise. These services are rather complex and are usually offered according to specific needs of the costumer. They can be extensive and high in price. Therefore, the degree of attention will be higher than average.

3. The signs

medDOC	MEDOK
Earlier trade mark	Contested sign

The relevant territory is Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43).

Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters and the earlier mark also enjoys protection e.g. for a uniform depiction in upper case letters (MEDDOC).

Taking into account that also a uniform depiction of the mark in upper case letters enjoys protection, a part of the relevant public will not split the earlier mark up, but perceive it as a single, meaningless and, therefore, distinctive word.

As for the aforesaid part of the public the likelihood of confusion will be higher, the examination of the opposition will focus on this part of the public.

The contested sign has no meaning for the relevant public. Therefore, it is distinctive.

Visually, the signs coincide in the string of letters “M-E-D” located in the beginning of the signs and their penultimate letter “O”. They differ in the additional letter “D” in the middle of the earlier mark, which has no respective counterpart in the contested sign, and in their respective last letter, namely the letter “C” in case of the earlier mark versus the letter “K” in the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs only differs in so far as in case of the earlier mark the stress will rather be on the double letter “D”, whereas in case of the contested sign the stress will rather be on the letter “E” (MEDDOC versus MEDOK). However, depending on the speed in which the words are pronounced, this difference may be hardly audible. The pronunciation of the respective ultimate letters “C” and “K” is identical in German.

Therefore, the signs are aurally highly similar.

Conceptually, focussing on the part of the public for which the earlier mark is meaningless, as set out above, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The signs are visually similar to an average degree and aurally highly similar. The services are similar and the level of attention will be higher than average.

Even consumers who pay a high degree of attention rarely have the chance to make a direct comparison between the different marks and need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

Therefore, and given the visual and aural similarities between the signs as set out above, likelihood of confusion cannot safely be excluded in respect of the services that have been found to be similar.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s German trade mark registration.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Peter QUAY

Tobias KLEE

Martin EBERL

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.